IP Ownership

The University of Pittsburgh claims ownership and control of the worldwide patent and intellectual property rights which result from activities of its faculty, staff, and students in accordance with University of Pittsburgh Policy 11-02-01.

Ownership of publications and other copyright materials

In the course of teaching, research and other scholarly and administrative activities at the University, faculty, staff, postdoctoral associates, students and others may create works that are protected by copyright. Federal Copyright Law provides protection for original works of authorship automatically at the time those works are fixed in a tangible medium.  It is the policy of the University that the copyright in all materials created by University faculty, postdoctoral associates, or students (hereinafter “University Authors”) in the course of their academic responsibilities resides in the University Authors, subject to the following exceptions*:

  • Assigned Tasks
  • Outside Agreements
  • Patentable Works
  • Institutional Works
  • Recording, Transmission, and Related Classroom Technology

* in accordance with University Policy 11-02-02

 

Collaboration with faculty from another university

When IP is created by employees of multiple universities (or other third parties), the IP may be jointly owned by those multiple universities (or other third parties).  In such instances, the Innovation Institute will work with other co-owning organizations on the protection, maintenance, and commercialization of the jointly owned IP, and negotiate any contracts necessary to this effect.

For example, Pitt has in place a Master Inter-Institutional Agreement with Carnegie Mellon University that provides a framework for cooperation in commercialization.

Collaboration with industry partners or other parties

Jointly held IP provides full ownership rights to all owners; that is, each party owns 100% rights to the IP.  As a result, each party can use, license, or sell the IP without consulting the other owner(s).  This is a significant matter because the value of IP is often determined by the ability to create a commercial monopoly.  Therefore, collaboration with a partner outside of an IP agreement may result in their full ownership of the IP and thus no need for them to license it. Remember that IP of a collaborator is typically owned by their employer.

Sponsored Research Funding

In accordance with elements of the Bayh-Dole Act, the University is entitled to elect ownership of any invention developed in the course of federally funded research contracts.  If the University does not elect to retain title to such invention, then control of that invention passes to the Federal agency that funded the research. The University’s Office of Research is responsible for managing such research contracts.

Industry sponsored research

In accordance with University of Pittsburgh Policies 11-02-01 and 11-02-02, the University claims ownership and control of IP developed under research contracts by its faculty, staff and students.  Industry sponsored research contracts, as well as some foundation funding agreements may contain licensing rights for IP arising under such agreements.  Industry sponsored research agreements and foundation funding agreements are negotiated and managed through the University’s Office of Research. The Innovation Institute will work with you on such arising IP and any licensing obligations to the sponsors of your research.

 

Transfer of tangible materials

Transfer of tangible material such as research reagents, cell lines, chemical compounds, physical hardware or other materials to outside third parties can compromise the University’s rights to IP contained therein.  By using a Material Transfer Agreement (“MTA”; a form that is available on the Office of Research Web site), the University’s rights in the material are preserved, including rights in any progeny or derivatives of the transferred materials. An MTA also assures that the recipient understands any limitations placed on the use of the material.

 

Inventors’ share of license revenues

Under University Policy 11-02-01, the balance of proceeds from any license or other amounts derived from the transfer of patent rights or unpatented intellectual property (excluding copyrights) will be distributed as follows:

–     30% to the inventor(s);

–     30% to the Patent Rights Fund;

–     10% to a University Development Fund;

–     15% to the department of the inventor; and

–     15% to the Innovation Institute.

 

Under University Policy 11-02-02, the balance of proceeds from royalties or disposition will be distributed as follows for Copyrights:

– 50% to the creator(s) or developer(s);

– 25% to the department or school of the creator/developer; and

– 25% to the University Copyright Development Fund.

– 25% to the department or school of the creator/developer; and

– 25% to the University Copyright Development Fund.